in the united states district court for the southern ... · collectibles, inc. (“a&r”), and...

Anthony J. Dreyer Jordan A. Feirman SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP Four Times Square New York, New York 10036 Tel: (212) 735-3000

Attorneys for Plaintiffs

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK

Plaintiffs National Hockey League (“NHL”) and NHL Enterprises, L.P. (“NHLE”)

(together “Plaintiffs”), by and through their undersigned counsel, for their Complaint against

Defendants The Hockey Cup LLC (“HC LLC”), ABC Stein LLC (“ABC LLC”), A&R

Collectibles, Inc. (“A&R”), and Roger Dewey (collectively “Defendants”), allege upon personal

knowledge with respect to themselves and their own acts, and upon information and belief as to

all other matters as follows:

------------------------------------------------------------ x

No. _____________

COMPLAINT

NATIONAL HOCKEY LEAGUE and NHL ENTERPRISES, L.P.,

Plaintiffs,

v.

THE HOCKEY CUP LLC, ABC STEIN LLC, A&R COLLECTIBLES, INC., and ROGER S. DEWEY,

Defendants.

: : : : : : : : : : : : :

------------------------------------------------------------ x

Case 1:18-cv-06597 Document 1 Filed 07/23/18 of 42

2

NATURE OF THE ACTION

1. This lawsuit concerns Defendants’ flagrant attempt to free-ride on the fame,

goodwill, and commercial value of the National Hockey League and its Member Clubs.

2. Seeking to capitalize on the popularity of the world’s premier professional hockey

league, Defendants have made extensive, unauthorized use of NHL and Member Club

trademarks and trade dress when marketing and selling products to the public. Indeed, the

unauthorized use of NHL intellectual property is the very foundation of Defendants’ businesses.

3. Most saliently, Defendants have marketed and sold a plastic beer stein (the

“Infringing Stein”) that is a replica of the “Stanley Cup” trophy—the world-famous and iconic

trophy that for nearly a century has been awarded to the NHL’s annual champion:

The STANLEY CUP Trophy The Infringing Stein

4. Defendants are well aware that the NHL has for decades owned numerous federal

trademark registrations—many of which are incontestable—as well as common law trademark

rights in the STANLEY CUP name, nicknames, image, likeness, trade dress, design, and/or

shape (hereinafter, the “STANLEY CUP Marks”).


Exam

5.

pervasive us

its product

NHL in the

6.

is designed t

some affili

Infringing S

Infringing S

in sports h

for the actu

with the “O

Example of Th

7.

Infringing S

counterfeit

5. Defenda

vasive use and licensi

products and servic

L in the minds of hoc

6. To furthe

signed to strengthe

e affiliation with D

nging Stein “The S

nging Stein with ot

orts history.” Def

he actual Stanley C

“Original Six

of The STANLE

7. Defenda

nging Stein. Plaint

ounterfeit hockey jers

efendants are also

nd licensing of the S

services, those ma

nds of hockey fans.

To further exploit tha

rengthen a false im

with Defendants a

“The Stanley Stei

n with other NHL tr

Defendants also

anley Cup trophy a

ix” NHL Mem

ANLEY CUP Trop

efendants’ willful

Plaintiffs are aw

key jerseys bearing,

also well aware

of the STANLEY C

hose marks are inde

y fans.

xploit that associati

alse impression tha

ndants and their produc

y Stein” and “The

HL trademarks

nts also use packagi

ophy and bears cit

Member Clubs:

Trophy In Cas

willful exploitation of

re aware, for exam

bearing, among othe

3

aware that, by virt

LEY CUP Marks

indelibly famous

ssociation, Defenda

ion that the NHL i

heir products. For e

nd “The Hockey Cup

as well as ad c

o use packaging that bot

ars city names, col

s:

y In Case Pa

ation of NHL int

or example, that De

ong other federally

by virtue of the NH

Marks in connecti

y famous and inextric

efendants’ market

NHL is the source

For example, De

key Cup,” and have

ad copy referenc

both imitates the

color combina

Packaging Fo

HL intellectual pr

Defendants al

erally registered tr

the NHL’s longsta

onnection with a w

nd inextricably assoc

arketing of the Inf

source of, a spon

ple, Defendants have

nd have paired ima

referencing “the gr

tates the well-know

ombinations, and logos

aging For The Infrin

tual property extend

also have mar

ered trademarks

longstanding and

th a wide variety of

y associated with t

the Infringing Ste

ponsor of, or has

have called the

ed images of the

the greatest trophy

known travel cas

, and logos associa

Infringing Stein

y extends beyond t

marketed and so

and copyright

g and

riety of

d with the

ng Stein

, or has

the

of the

st trophy

vel case

ssociated

g Stein

yond the

d and sold

opyrighted


4

materials, the “NHL” word mark and the NHL shield design, and have utilized domain names

containing or consisting of NHL trademarks.

8. The foregoing uses of NHL intellectual property are intended to, and do, deceive

consumers into believing that the NHL and its Member Clubs are affiliated with Defendants, and

that the NHL has approved or endorsed the use of its valuable trademarks and trade dress in

connection with Defendants’ businesses and products. In addition, Defendants’ unauthorized use

of NHL trademarks and trade dress in connection with unauthorized products, including products

that are of inferior quality, has diluted the famous and distinctive nature of those trademarks and

trade dress through blurring and tarnishment.

9. Not only are Defendants willfully violating the NHL’s intellectual property rights

by selling infringing products, but they also are trying to usurp those intellectual property rights.

Specifically in connection with the Infringing Stein business, Defendants have applied for

federal registrations for two design marks (depicted below) comprised of the term “The Cup”

along with hockey indicia (the “Infringing CUP Applications”). Defendants are well aware that

the hockey viewing public routinely identifies and knows the Stanley Cup trophy simply as “The

Cup,” and that term has frequently been used on and in connection with products and services

officially licensed by NHLE that refer to or depict the Stanley Cup trophy.

(U.S.P.T.O. Serial No. 87343070) (U.S.P.T.O. Serial No. 87342406)

10. To make matters worse, when the NHL recently filed an opposition to the

foregoing applications in the U.S. Patent and Trademark Office, Defendants responded by


5

seeking cancellation of all twelve of the federal “STANLEY CUP” word and design mark

registrations cited by the NHL in its opposition as examples of prior use (hereinafter, the

“STANLEY CUP Registrations”), including several incontestable registrations held by the NHL.

11. Defendants’ arguments for cancellation, however, are factually and legally bereft,

and Defendants lack any legitimate basis to challenge the NHL’s longstanding and indisputable

trademark rights in connection with the Stanley Cup.

12. Accordingly, and for the reasons set forth more fully below, Defendants are liable

for, among other things, trademark infringement, false association and false designation of

origin, trademark dilution, unfair competition, copyright infringement, and violations of New

York statutory and common law. Defendants should be enjoined from any further unauthorized

use of NHL intellectual property, and Plaintiffs are entitled to damages in an amount to be

determined at trial.

13. In addition, the Court should reject Defendants’ attempts to commandeer the

NHL’s intellectual property rights. The Court should issue a declaratory judgment that: (a) the

STANLEY CUP Registrations are valid and are not subject to cancellation on any of the grounds

asserted by Defendants in the U.S. Patent and Trademark Office; and (b) Defendants’ Infringing

CUP Applications should not be granted due to the NHL’s priority and the likelihood of

confusion that arises from Defendants’ use of the proposed new marks.

THE PARTIES

14. Plaintiff National Hockey League (“NHL”) is an unincorporated association

organized as a joint venture and having a business address of 1185 Avenue of the Americas,

New York, NY 10036.


6

15. Plaintiff NHL Enterprises, L.P. (“NHLE”) is a Delaware limited partnership

having a principal place of business at 1185 Avenue of the Americas, New York, New York

10036.

16. Defendant The Hockey Cup LLC (“HC LLC”) is an Illinois limited liability

company formed in March 2017, having a principal place of business at 851 N. Seton Court,

Wheeling, Illinois 60090. HC LLC is owned, managed, and/or controlled by Defendant Roger

Dewey.

17. Defendant ABC Stein LLC (“ABC LLC”) was an Illinois limited liability

company formed in July 2015, with a principal place of business at 851 N. Seton Court,

Wheeling, Illinois 60090. ABC LLC was owned, managed, and/or controlled by Defendant

Roger Dewey. Until May 2017, ABC LLC was named “Stanley Stein LLC,” and the entity was

involuntarily dissolved by the State of Illinois on or about January 12, 2018.

18. Defendant A&R Collectibles, Inc. (“A&R”) is an Illinois corporation formed in

2007, with a listed principal place of business at 1345 Paddock Drive, Wheeling, Illinois 60090,

and is owned, managed, and/or controlled by Defendant Roger Dewey. A&R’s actual principal

place of business is 851 N. Seton Court, Wheeling, Illinois 60090, and the address was

mistakenly not updated on A&R’s corporate filings as had been done in the state filings for both

ABC LLC and HC LLC. A&R was incorporated by Defendant Roger Dewey’s wife, Anna M.

Dewey, who also owns shares in the company.

19. Defendant Roger Dewey is an individual residing in Wheeling, Illinois who owns,

manages, and/or controls HC LLC, ABC LLC, and A&R.

20. Notwithstanding the fact that HC LLC, ABC LLC, and A&R are separate entities

under Illinois law, Mr. Dewey has treated those businesses interchangeably. In that regard,


7

documents filed with the State of Illinois indicate that, for example: (a) Mr. Dewey is the sole

“manager” of HC LLC and ABC LLC, and the sole “President” of A&R; and (b) Mr. Dewey’s

address is identical to the address of each of the respective corporate entities.

21. Mr. Dewey has dominated the operations of HC LLC, ABC LLC, and A&R,

commingled the revenues and funds of those entities, not observed corporate formalities, and in

various other ways treated the entities as mere alter egos of each other.

JURISDICTION AND VENUE

22. This is an action for trademark infringement in violation of Section 32 of the

Lanham Act, 15 U.S.C. § 1114; unfair competition, trademark infringement, false association,

and false designation of origin in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C.

§ 1125(a)(1)(A); trademark dilution in violation of Section 43(c) of the Lanham Act, 15 U.S.C. §

1125(c); copyright infringement in violation of the Copyright Act, 17 U.S.C. § 501; violations of

New York statutory and common law, including provisions of the New York General Business

Law and common law trademark infringement and unfair competition; and declaratory judgment

pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202.

23. This Court has jurisdiction over the federal claims pursuant to 15 U.S.C. § 1121

(original jurisdiction for Lanham Act Claims), 28 U.S.C. §§ 1331 (federal question jurisdiction),

and 28 U.S.C. § 1338(a) (original jurisdiction for copyright and trademark claims). Jurisdiction

over the related state law claims, which derive from a common nucleus of operative facts with

the federal claims, is based on 28 U.S.C. §§ 1367 (supplemental jurisdiction) and 1338(b)

(original jurisdiction for unfair competition claims when joined with related claims under the

copyright or trademark laws).

24. Venue is proper in this Court pursuant to 28 U.S.C. § 1391 and this Court may

properly exercise personal jurisdiction over Defendants. Each of the Defendants directly targets


8

business activities toward consumers in the State of New York and this district, and residents of

this district can purchase (and have purchased) Defendants’ infringing goods through the fully

interactive, commercial Internet stores operated by Defendants themselves (e.g.,

www.arcollectibles.com, www.hockeycup.com, and www.hockeymug.com) or through postings

made by Defendants on third-party websites, such as Amazon.com.

25. Plaintiffs are aware of at least one sale of an Infringing Stein and of a counterfeit

NHL jersey made by Defendants into this district, where the items were directly shipped.

Defendants have sold other products consisting of or bearing NHL trademarks in the State of

New York and in this district.

26. Plaintiff NHL maintains headquarters in this district.

27. Defendants have committed and threaten to commit infringement, dilution, and

other torts in the State of New York and in this district, and a substantial part of the events giving

rise to Plaintiffs’ claims and injuries occurred in this district.

FACTS COMMON TO ALL CLAIMS

The NHL, NHLE, NHL Clubs, and Their Valuable Marks

28. The NHL operates the world’s premier professional ice hockey league, consisting

of thirty-one (31) Member Clubs (the “NHL Clubs”) in the United States and Canada.

29. Founded in 1917, the NHL has consistently attracted a large public following,

both in the United States and worldwide. Each year, during a nine-month regular season, NHL

Clubs play over 1,230 games that are viewed by hundreds of thousands of live spectators.

Millions more fans view and follow the respective NHL Clubs and games on television and in

electronic and print media.


9

30. To identify and distinguish the NHL and its Clubs, and the products and

entertainment services that they provide, the NHL and NHL Clubs have adopted and used in

commerce, including in the State of New York, certain names, nicknames, terms, logos, symbols,

and other trademarks, trade dress (such as uniform designs and color schemes), and identifying

indicia (collectively, the “NHL Marks”).

31. NHLE is the exclusive national United States licensee of the NHL Marks, and is

authorized by the NHL and the NHL Clubs to both license and enforce rights in the NHL Marks.

32. A significant aspect of NHLE’s business and resulting revenues has been for

many years, and continues to be, the merchandising and licensing of NHL Marks.

33. NHLE has entered into numerous licensing agreements in the United States,

authorizing use of NHL Marks on a wide variety of products, including but not limited to apparel

(such as hockey jerseys) and beverage containers. Retail sales revenue for NHLE-licensed

merchandise bearing NHL Marks was in the hundreds of millions of dollars for the 2016-2017

fiscal year alone.

34. NHLE, directly and through authorized licensees, has established and maintained

high standards of quality for products bearing NHL Marks (including all of the categories of

NHL Marks discussed and/or referenced in this Complaint) and continues to maintain stringent

quality control over licensees, manufacturers, and other authorized users of NHL Marks.

35. As a result of the foregoing continuous and extensive uses, licensing, and policing

of the NHL Marks for a variety of goods and services, the substantial advertising and promotion

of the NHL and NHL Clubs, and the great popularity of NHL hockey, the NHL Marks are

extremely well-known to the public, and have developed tremendous goodwill, value, and

strength. Over the course of many decades—and long prior to any uses of NHL Marks made by


10

Defendants—consumers have come to associate goods and services bearing or featuring NHL

Marks as emanating from, or being sponsored or approved by, the NHL and/or NHL Clubs.

36. To protect the valuable reputation and goodwill of the NHL and NHL Marks, and

to ensure that NHL Marks will serve their intended purpose of designating goods and services

emanating from and associated with the NHL, NHLE has established a comprehensive program

of enforcement to protect NHL Marks from infringement, dilution, disparagement,

counterfeiting, and misappropriation. Among other things, NHLE regularly investigates and

pursues unauthorized uses of the NHL Marks, including through cease and desist letters and,

when necessary, lawsuits against third parties.

The Valuable NHL Marks Being Used by Defendants Without Authorization

A. The STANLEY CUP Marks

37. The Stanley Cup trophy is the oldest trophy competed for by professional athletes

in North America. Since 1926, the trophy has been awarded solely to the annual NHL champion.

38. Photographs of the Stanley Cup trophy and the distinctive travel box or trunk in

which it is transported—which often displays numerous stickers from locations where the

Stanley Cup has travelled—are annexed hereto as Exhibit A.

39. Following each NHL regular season, the NHL champion is determined by a

tournament among the top sixteen NHL Clubs comprised of a series of best-of-seven game

elimination rounds. Because the Stanley Cup trophy is awarded to the winner of that

tournament, the NHL post-season is referred to by the NHL and by hockey fans as “the

STANLEY CUP Playoffs,” and the final round in which the two remaining NHL Clubs compete

is referred to as “the STANLEY CUP Final.”

40. The STANLEY CUP Playoffs and STANLEY CUP Final are extremely popular

sporting events in the United States and worldwide. The U.S. national broadcasts of the six


11

games of the 2017 STANLEY CUP Final alone were watched by an estimated 28.1 million

viewers, with 7 million watching the clinching game.

41. Logos used by the NHL for the STANLEY CUP Playoffs and STANLEY CUP

Finals—such as for the 2018 iterations (shown below)—include visual depictions of the Stanley

Cup trophy, which consists of a ridged circular base that narrows into an open bowl shape with

curved lines radiating upward from the base of the bowl.

42. Through its widely publicized and epic history, the Stanley Cup trophy has

become enormously famous in the United States and worldwide as the paramount achievement

in professional ice hockey, and is routinely recognized as one of the greatest and most

celebrated—if not the greatest and most celebrated—individual trophy in sports. See, e.g.,

https://www.foxsports.com/southwest/gallery/the-all-time-best-trophies-in-sports-062114 (listing

the Stanley Cup trophy as #1 on its list of the “All-Time Best Trophies In Sports,” directly ahead

of the Heisman Trophy and Olympic Gold Medal); http://bleacherreport.com/articles/697139-

the-stanley-cup-10-reasons-why-its-the-greatest-trophy-in-all-of-sports (providing the author’s

“10 Reasons Why [The Stanley Cup is] the Greatest Trophy in Sports”).

43. In order to satisfy the public’s enthusiasm and demand for products that celebrate

or commemorate an NHL Club’s STANLEY CUP championship and/or NHL hockey more


12

generally, the NHL has exclusively authorized NHLE to license a wide variety of products that

bear the name, nicknames, image, likeness, and/or shape of the STANLEY CUP trophy (the

“STANLEY CUP Marks”) in the United States. Such products have included, for example,

beverageware, beer steins, popcorn makers, Christmas tree ornaments, collectible replicas of the

STANLEY CUP trophy, audio speakers, and coin banks.

44. Two recent examples of officially licensed STANLEY CUP products are a

Bluetooth speaker in the shape of the trophy and a crystal miniature of the Stanley Cup (with a

commemorative box) containing melted game-used ice from this year’s STANLEY CUP Final:

NHLE-Licensed Bluetooth Speaker1

NHLE-Licensed Crystal Miniature2

45. The NHL also has exclusively authorized NHLE to license the STANLEY CUP

Marks in the United States to the NHL’s sponsors and partners, including those in the beverage

industry, for commercial and promotional uses in connection with a wide variety of goods and

services. Representative samples of beverage-related products bearing STANLEY CUP Marks

are depicted in Exhibit B.

1 http://shop.nhl.com/catalog/product/NHL_Stanley_Cup_Bluetooth_Speaker 2 http://shop.nhl.com/league/NHL/team/Washington_Capitals/category/5050/browse/featured

product/3180452/partnerid/12724/source/ak1944nhl-pla?sku=11065403&targetid=pla-326971430769


13

46. The NHL and its fans also frequently refer to the Stanley Cup trophy simply as

“THE CUP,” which term has been used on officially licensed NHL merchandise. For example,

officially licensed NHL apparel has borne phrases such as “WE WANT THE CUP,”

“BECAUSE IT'S THE CUP,” “QUEST FOR THE CUP,” and “BRING HOME THE CUP.”

Representative samples of such products are depicted in Exhibit C.

47. Indeed, the homepage of the NHL’s website at the start of this year’s Stanley Cup

Playoffs featured a reference to the Stanley Cup trophy as “The Cup”:

(www.nhl.com, Apr. 11, 2018.)

48. Through the foregoing continuous and extensive uses, the STANLEY CUP Marks

have acquired substantial goodwill and are extremely well known to the public, who associate

products and services that bear the STANLEY CUP Marks with the NHL.

49. Moreover, the NHL owns numerous valid and enforceable federal registrations

for STANLEY CUP Marks (the “STANLEY CUP Registrations”), including the following:


Trad

Trad

STAN

Trademark or

Trade Dress

STANLEY CUP

Reg. N

CUP

888,872

2,422,903

4,686,827

4,767,415

1,793,016

2,395,418

4,677,429

3,961,015

3,922,838

3,922,822

3,922,828

Reg. No. Good

Ser

888,872

2,422,903

4,686,827

4,767,415

1,793,016

2,395,418

4,677,429

3,961,015

3,922,838

3,922,822

3,922,828

14

Goods/

Services

Class

41 Useas

25 Useas

14 Useas

14 Useas

41 Useas

25 Useas

14 Useas

25 Useas

41 Useas

41 Useas

25 Useas

Use in commeas 1924

Use in commeas 1981

Use in commeas December


Use in commeas December 1954

Use in commeas 1981


Use in commeas May 2009

Use in commeas May 2009

Use in commeas April 2009

Use in commeas April 2009

Priority

ommerce since at l

ommerce since at l

ommerce since atmber 1991


ommerce since at mber 1954

ommerce since at l


ommerce since at l2009

ommerce since at l2009

ommerce since at l 2009

ommerce since at l 2009

nce at least as early







ce at least as early

ce at least as early



s early

s early

s early

s early

s early

s early

s early

s early

s early

s early

s early


15

Trademark or

Trade Dress

Reg. No. Goods/

Services

Class

Priority

2,191,055 25 Use in commerce since at least as early as April 1997

50. STANLEY CUP Registrations Nos. 888,872; 2,422,903; 1,793,016; 2,395,418;

3,961,015; 3,922,838; 3,922,822; 3,922,828; and 2,191,055 are incontestable within the meaning

of 15 U.S.C. §§ 1115(b) and 1065.

B. The LEAGUE Marks

51. In addition to the various STANLEY CUP Marks, the NHL owns, and NHLE

licenses, numerous other valuable trademarks that refer specifically to the “NHL” name or the

NHL Shield (collectively, the “LEAGUE Marks”). Although the NHL Shield has been used in

commerce since at least as early as 1947, the current iteration (depicted immediately below)

has been used in commerce since at least as early as 2005.

52. The LEAGUE Marks are used in connection with a wide variety of goods and

services—including but not limited to licensed NHL hockey jerseys. Representative samples

of NHLE-licensed products bearing LEAGUE Marks are depicted in Exhibit D.


16

53. As a result of such uses, the LEAGUE Marks have acquired substantial fame,

distinctiveness, and goodwill, and consumers have come to associate goods and services

bearing the LEAGUE Marks as emanating from, or being sponsored or approved by, the NHL.

54. The NHL owns numerous valid and enforceable federal registrations for

LEAGUE Marks (the “LEAGUE Registrations”). These include, but are not limited to,

registrations in International Class 25 (clothing) for the NHL word mark (U.S. Reg. No.

1,962,135) and for the NHL Shield (U.S. Reg. No. 3,248,499). Both of these registrations

expressly encompass use of the marks on “jerseys,” and are incontestable within the meaning

of 15 U.S.C. §§ 1115(b) and 1065.

55. A current version of the NHL Shield logo is also the subject of United States

Copyright Registration No. VA 1-371-932 (annexed hereto as Exhibit E). The NHL owns all

right, title, and interest to the copyright in the NHL Shield logo, having been assigned such rights

from the author and original owner, NHLE.

Defendants’ Marketing and Sales of Infringing Products Bearing NHL Marks

56. Seeking to capitalize and free-ride on the value and goodwill of the NHL

Marks—and with knowledge that the public identifies goods and services bearing NHL Marks as

originating from, being associated with, or being approved by the NHL and/or NHL Clubs—

Defendants have manufactured, marketed, and sold products bearing numerous NHL Marks

without seeking or obtaining authorization from NHLE or any NHL entity (“Infringing

Products”).

57. On information and belief, all pertinent decisions relevant to the manufacture,

marketing, sale, and distribution of Infringing Products have been made and/or carried out by


Roger Dew

LLC, and A

58.

connection

entity owne

has not resp

A.

59.

selling the

configurat

60.

is package

trunk of th

NHL’s “O

Chicago)

oger Dewey, who ha

, and A&R.

58. On infor

onnection with Infringi

y owned by Mr. D

not respected corpor

A. Defend

59. Since a

ng the Infringing S

iguration of the St

60. Adding t

packaged in a box de

of the Stanley Cup

Original Six

), together wit

ho had and continue

n information and be

h Infringing Produc

d by Mr. Dewey was the

corporate formal

efendants’ Mark

ince at least as ear

nging Stein—a low

the Stanley Cup tr

dding to the likeli

a box designed to re

nley Cup trophy,

l Six” Clubs are loc

her with STANLEY

nd continues to have ul

on and belief, all f

roducts have been c

y was the nominal pur

formalities and dis

Marketing and S

as early as May

low quality, cle

y Cup trophy, save f

likelihood of conf

d to resemble the w

and bears trave

are located (Bost

NLEY CUP Marks.

17

o have ultimate aut

ll funds used and r

ve been commingle

inal purveyor of a

nd distinctions in ope

g and Sale of the I

May 2016, Defenda

ity, clear plastic be

, save for a few im

of confusion creat

ble the widely-recogni

rs travel stickers c

Boston, New Yor

Marks.

ate authority and c

used and revenues

ngled irrespecti

of a particular pr

in operating hi

he Infringing S

efendants have be

beer stein in t

few immaterial dif

on created by Defenda

recognized and publ

ckers corresponding t

ew York, Detroit

and control over H

venues received by Mr

spective of which c

icular product, and Mr

ting his various bu

ging Stein

have been marketing a

in in the precise

rial differences:

fendants, the Inf

d and publicized tr

sponding to the citi

etroit, Montreal,

ol over HC LLC, A

ved by Mr. Dewey i

which corporate

and Mr. Dewey

ous businesses.

arketing and/or

shape and

he Infringing Ste

ized travel case

o the cities where the

real, Toronto, and

LLC, ABC

. Dewey in

porate

nd Mr. Dewey

ing Stein

case or

here the

and


61.

combinations

cities. For

Club. In a

Leafs hock

62.

replete wit

and the Inf

61. These

binations and with ot

. For example, B

In addition, “To

hockey club—

Infringing S

62. Both the

ete with NHL Mar

nd the Infringing Stei

These “Original Six

nd with other indic

ple, Boston is dep

“Toronto” not onl

—but also evoke

inging Stein Box S

oth the design of t

L Marks, are intende

ng Stein on the one

nal Six” city trave

r indicia associated w

on is depicted in blac

o” not only appears

evokes the club

Box Sticker

gn of the Infringing S

e intended to, and do, c

he one hand, and

18

y travel stickers are

ed with the O

d in black and gold

ppears in the blue

club’s trademarke

Tor

(e.g.

fringing Stein and t

o, and do, create a f

nd, and the NHL and N

kers are printed in t

h the Original Six

nd gold, the colors of the

he blue and white co

marked logos:

Toronto Map

e.g., U.S. Reg. N

in and the product’

eate a false associa

L and NHL Clubs

nted in the general

l Six Clubs located i

olors of the Boston B

hite colors of the To

o Maple Leafs Logo

. Reg. No. 2,499,468)

duct’s packaging,

association betwee

L Clubs on the othe

neral color

located in those

on Bruins NH

the Toronto Ma

afs Logo

. 2,499,468)

kaging, which are

on between Defendant

he other.

uins NHL

onto Maple

ch are

fendants


63.

Exhibit F

64.

promotion

into believ

NHL and

65.

Infringing

the Infringi

initially re

“STANLE

Defendant

HOCKEY

the Stanley C

66.

HOCKEY

Stein itself

63. Additiona

F.

64. In addit

otional efforts for

ieving that Def

L and are properly l

65. For exa

nging CUP Applic

nfringing Stein in

ally referred to the

TANLEY” directly

ndants now refer

KEY CUP,” explo

tanley Cup trophy

66. Defenda

KEY CUP” that i

n itself, as well as

dditional images o

n addition to the pr

orts for the Infringi

hat Defendants’ produ

operly licensed prod

or example, and a

Applications (see

in a manner conf

d to the Infringing S

rectly from the Sta

refer to their busi

exploiting the com

trophy as “The Cup

efendants created l

” that include image

ell as on related

ages of the Infringi

o the product design

nfringing Stein also

products are so

nsed products bearing N

, and as discussed i

see infra ¶¶ 85

nner confusingly si

ging Stein and AB

the Stanley Cup and

business and the

the common under

The Cup.”

reated logos for “S

ude images of hocke

ated product packa

19

Infringing Stein a

t design and packa

also reflect a de

sourced by, aut

s bearing NHL Ma

ussed in greater de

85-99), Defenda

ngly similar to the

nd ABC LLC as “

y Cup and using “STE

nd the Infringing S

on understanding tha

ogos for “STANLEY S

hockey sticks, and pu

packaging and in m

tein and its packa

nd packaging, Defenda

ect a deliberate att

d by, authorized by, or

L Marks.

ater detail below

efendants have na

to the STANLEY

C as “STANLEY

ng “STEIN” as a sy

nging Stein as “TH

nding that the NHL

LEY STEIN,” “TH

nd put those l

ng and in marketing m

ackaging are anne

fendants’ other

ate attempt to conf

zed by, or affiliate

ow with respect t

have named their busi

NLEY CUP Marks.

NLEY STEIN”—

as a synonym of

n as “THE CUP” and/

NHL and hockey f

,” “THE CUP,” a

hose logos on the I

keting materials:

annexed hereto a

s’ other marketing a

to confuse consum

ffiliated with the

spect to Defendant

d their businesses and

Marks. Defendant

—lifting the na

m of “CUP.”

P” and/or “THE

hockey fans refer t

UP,” and “THE

the Infringing

hereto as

keting and

onsumers

h the

fendants’

and

fendants

ng the name

THE

ns refer to

nging


20

67. Defendants’ marketing materials contain numerous other false and misleading

indications that the Infringing Stein is an officially licensed NHL product. For example,

Defendants’ retail websites for the Infringing Stein—www.hockeycup.com,

www.hockeymug.com, and www.arcollectibles.com—as well as Defendants’ social media pages

on Facebook, Instagram, and Twitter, are replete with references to the Stanley Cup, including

the iconic annual tradition that the NHL champions “hoist the Cup” overhead. See

en.wikipedia.org/wiki/Traditions_and_anecdotes_associated_with_the_Stanley_Cup (describing

the history of the “Captain hoisting the cup”). For example:

68. Additional representative images of Defendants’ retail websites and social media

postings for the Infringing Stein are annexed hereto as Exhibit G.


21

69. Defendants’ attempt to associate their businesses and the Infringing Stein with the

NHL is reinforced by their repeated pairing of the Infringing Stein with numerous NHL

trademarks, merchandise, and other identifying indicia in their social media pages and elsewhere.

70. For example, on April 13, 2018, Defendants marketed a “Playoff Special”

discount for the Infringing Stein that was intentionally timed to coincide with the NHL’s 2018

STANLEY CUP Playoffs, which had begun only two days earlier:


22

71. On June 8, 2018, the day after the Washington Capitals won the STANLEY CUP

Championship, Defendants marketed the Infringing Stein by inviting consumers to “[c]elebrate

this weekend with ‘THE CUP’”:

72. Even during the off-season, Defendants’ marketing continues to create an

association between the Infringing Stein and the NHL. For example, on June 28, 2018—shortly


23

after the conclusion of the NHL season—one of Defendants’ social media promotions for the

Infringing Stein stated that “[i]t may be the off season for hockey but not for drinking beer.”

73. Defendants’ references to STANLEY CUP Marks and other NHL Marks are

additionally damaging to the goodwill and reputation of the NHL because the Infringing Stein,

which is not subject to NHLE quality controls, is poorly designed and made cheaply.

74. In that regard, the Infringing Stein has received a number of consumer complaints

and negative reviews. For example, reviews on Amazon.com include that the product is

“impossible to clean,” “terribly difficult to fill and to drink out of and results in flat bear [sic],”

and that it has “no beer flow.”

75. NHLE has notified Defendants that their activities are infringing, but Defendants

have refused to cease those activities, including the marketing and sale of the Infringing Stein.

B. Defendants’ Marketing and Sale of

Counterfeit Jerseys Bearing LEAGUE Marks

76. Defendants also have marketed and sold hockey jerseys bearing the NHL word

mark and the NHL Shield, including—but likely not limited to—a jersey that also bears the

marks of the Chicago Blackhawks (the “Counterfeit Jersey”).

77. Defendants have never received authorization from NHLE, or any other NHL

entity, NHL Club, or authorized licensee, to use NHL Marks, including LEAGUE Marks, on or

in connection with merchandise or apparel, including jerseys.

78. The Counterfeit Jersey is designed to emulate and be passed off as officially

licensed NHL merchandise despite being of significantly lower quality than genuine apparel:


NH

79.

authorized N

3See httBlackha

NHLE-License

79. Defenda

horized NHL produc

http://shop.nhllackhawks_Fanat

icensed Merchan

efendants knew

L product.

hop.nhl.com/Chicago_Bks_Fanatics_Branded_R

erchandise3

or should have

Chicago_Blackhawranded_Red_Hom

24

Defe

ld have known tha

ackhawks_Customd_Home_Breakaw

Defendants’ Cou

that the produc

ustomized_Jerseyseakaway_Custom_Je

ts’ Counterfeit M

product was not a ge

erseys/Mens_Chiom_Jersey.

rfeit Merchandise

s not a genuine,

Mens_Chicago_

andise


25

80. The Counterfeit Jersey bears numerous indicia of a non-genuine, low quality

good. For example, the Counterfeit Jersey lacks the NHL hologram hangtag that accompanies

all legitimate, licensed NHL goods, has exposed stitching and torn paper, and there are printing

mistakes in the execution of the tags.

81. Defendants have marketed and sold the Counterfeit Jersey on A&R’s retail

website, www.arcollectibles.com, including to customers in the State of New York and this

judicial district.

82. The Counterfeit Jersey has been marketed and sold on the A&R retail website

alongside genuine licensed NHL products.

83. Upon information and belief, Defendants have sold the Counterfeit Jersey on

other websites and through other media alongside genuine licensed NHL products.

84. Upon information and belief, Defendants have also sold other unauthorized

merchandise bearing NHL Marks aside from the Counterfeit Jersey discussed above.

Defendants’ Attempts to Usurp Rights in NHL Marks: The Infringing CUP Applications

85. When Defendants began marketing and selling the Infringing Stein, they sought to

associate themselves and their product with the NHL and the STANLEY CUP Marks by, among

other things: (a) referring to their business and the Infringing Stein as the “STANLEY STEIN”;

(b) using the “STANLEY STEIN” logo with hockey sticks depicted above (see supra ¶ 66); and

(c) registering and using a retail website with the domain name www.thestanleystein.com.

86. In connection with sales of the Infringing Stein, Defendants filed intent-to-use

applications in August 2015 and May 2016 for U.S. trademark registrations for “THE

STANLEY STEIN” (Serial No. 86712633), “STANLEY’S STEIN” (Serial No. 86712626), and

the STANLEY STEIN logo (Serial No. 87033093).


26

87. These applications were expressly abandoned on or about March 13, 2017,

following a complaint from another company that has no relationship to hockey, but that sells a

variety of beverage containers such as thermoses and coolers under the brand name “Stanley.”

At or around the same time, Defendants discontinued use of www.thestanleystein.com.

88. Defendants, however, were undeterred in their attempt to deceive consumers and

falsely affiliate themselves and the Infringing Stein with the NHL by exploiting the STANLEY

CUP Marks. Defendants therefore immediately pivoted to new confusing business and product

names such as “THE HOCKEY CUP” and “THE CUP.”

89. Defendants also registered retail websites to sell the Infringing Stein including

www.hockeycup.com and www.hockeymug.com.

90. In connection with the Infringing Stein, Defendants filed intent-to-use trademark

applications in the U.S. Patent and Trademark Office in February 2017, for the following two

design marks purporting to encompass goods such as “mugs; mugs, not of precious metal; beer

mugs; cups and mugs; glass mugs; [and] porcelain mugs” (the “Infringing CUP Applications”):

(U.S.P.T.O. Serial No. 87343070) (U.S.P.T.O. Serial No. 87342406)

91. The foregoing Infringing CUP Applications were originally filed on behalf of

ABC LLC, but were assigned to HC LLC on or about March 13, 2017—the same date that the

“STANLEY STEIN” applications were abandoned.

92. Defendants have filed the Infringing CUP Applications with full knowledge that

the NHL has preexisting trademark rights in the STANLEY CUP Marks, including but not

limited to “THE CUP” when used as a shorthand term for the Stanley Cup trophy.


27

93. Defendants are well aware of—and, in filing the Infringing CUP Applications,

seek to capitalize on—the fact that consumers will be confused and associate “THE CUP” with

the STANLEY CUP Marks and the NHL when that term is used in connection with the

Infringing Stein, and any other contexts where NHL Marks and/or the Stanley Cup trophy are

depicted.

94. To avoid consumer confusion and protect the goodwill and reputation of the

STANLEY CUP Marks, the NHL filed an opposition to the Infringing CUP Applications in the

U.S. Patent and Trademark Office on November 15, 2017 (U.S.P.T.O. Opp. No. 91237818,

Serial No. 87343070). In that filing, the NHL cited twelve of its STANLEY CUP Registrations

(all listed in the table set forth supra at ¶ 49) as well as its common law rights, noting that

registration of the Infringing CUP Applications would create a likelihood of confusion and

violate the NHL’s priority in the STANLEY CUP Marks.

95. On December 21, 2017, Defendants filed their Answer and Counterclaims in the

U.S. Patent and Trademark Office. In response to a motion to dismiss filed by the NHL,

Defendants filed their First Amended Answer and Counterclaims on March 13, 2018 (the “PTO

Counterclaims”).

96. In addition to asserting numerous meritless affirmative defenses, Defendants seek

cancellation in their entirety of all twelve of the STANLEY CUP Registrations cited in the

NHL’s opposition.

97. As set forth in the PTO Counterclaims, Defendants’ cancellation proceeding is

based primarily on their entirely unsupported and false legal theory that the NHL cannot own

any trademark rights related to “STANLEY CUP” as a matter of law because the NHL does not

own, or purportedly does not “control” the disposition of, the physical Stanley Cup trophy.


28

98. That same incorrect theory underlies Defendants’ baseless assertion that the NHL

committed fraud on the U.S. Patent and Trademark Office when, in its applications for each

STANLEY CUP Registration, an NHL representative stated that the NHL is the owner of the

mark and to the best of their knowledge no other person or entity has the right to use that mark in

commerce. In the PTO Counterclaims, Defendants’ allegations that the NHL representatives

knowingly made false statements of fact to the U.S. Patent and Trademark Office are

inadequately pled, are made only in conclusory fashion, and are summarily based “on

information and belief.”

99. Defendants also baselessly seek “the entire cancellation” of the twelve STANLEY

CUP Registrations due to alleged “abandonment” or “lack of use” of the registered marks for

certain of the goods listed in those registrations. Defendants’ blanket pleading alleges “on

information and belief” that all of the goods listed in the STANLEY CUP Registrations were not

sold or licensed by the NHL, or have been abandoned “on information and belief.” It is clear,

however, that Defendants did little to no investigation to support that false allegation; even a

cursory Internet search would have readily revealed to Defendants that the NHL has used the

challenged marks on the goods listed in the registrations.

Irreparable Harm to Plaintiffs From Defendants’ Misconduct

100. In addition to substantial monetary damages, Defendants’ conduct has caused, and

will continue to cause, Plaintiffs to suffer irreparable harm for which there is no adequate remedy

at law.

101. Defendants’ unauthorized use of numerous NHL Marks in connection with their

businesses, including but not limited to: (a) the marketing and sale of the Infringing Stein; (b)

the marketing and sale of the Counterfeit Jersey; and (c) the use of NHL Marks in Defendants’

business names and web addresses, violates Plaintiffs’ exclusive intellectual property rights and


29

creates an untenable situation in which Plaintiffs cannot exercise control over their trademarks,

brands, goodwill, and reputation.

102. If Defendants are permitted to continue exploiting NHL Marks for their own

profit, consumers will continue to be deceived into believing that Defendants and their Infringing

Products have been produced, authorized, endorsed, or sponsored by Plaintiffs. This not only

will continue to divert customers away from Plaintiffs (causing damages in an amount that would

be difficult to ascertain with certainty), but also deprives Plaintiffs of the ability to exercise

critical quality control over products that bear NHL Marks.

103. The inability to exercise such control is particularly problematic in connection

with goods that are poorly designed or of poor quality, such as Defendants’ products. Unless

restrained by this Court, consumers will come to associate Plaintiffs and the NHL Marks with

shoddy products, damaging Plaintiffs’ business and goodwill. Such association would be

harmful to Plaintiffs by blurring and tarnishing the NHL Marks even in any instances where

consumers were not confused about the source or endorsement of Defendants’ Infringing

Products.

FIRST CLAIM FOR RELIEF

(Trademark Infringement – 15 U.S.C. §§ 1114)

104. Plaintiffs hereby repeat and re-allege the allegations set forth in the preceding

paragraphs of this Complaint.

105. Plaintiffs are the exclusive owners and/or U.S. licensors of the federally registered

NHL Marks, including the STANLEY CUP Registrations and LEAGUE Registrations identified

above.

106. The foregoing federally registered NHL Marks and the goodwill of the businesses

associated with them in the United States are valid, of great and incalculable value, are highly


30

distinctive, and have become uniquely and universally associated in the public mind with

Plaintiffs and NHL goods and services upon which the NHL Marks appear, denoting goods and

services of the highest quality and reputation.

107. Without Plaintiffs’ authorization or consent, and with full knowledge of

Plaintiffs’ well-known rights in the NHL Marks, Defendants willfully copied, lifted,

misappropriated, counterfeited, and incorporated the federally registered NHL Marks and/or

colorable imitations thereof in Defendants’ businesses, brands, and products offered for sale and

sold in interstate commerce, including but not limited to: (a) using the marks reflected in the

STANLEY CUP Registrations, or colorable imitations thereof, in connection with the marketing

and sale of the Infringing Stein; and (b) using the marks reflected in the LEAGUE Registrations,

or colorable imitations thereof, in connection with the marketing and sale of the Counterfeit

Jersey.

108. Such uses of the federally registered NHL Marks by Defendants are intended to,

and are likely to, confuse and deceive consumers into believing, initially or otherwise, that

Plaintiffs are affiliated with, associated with, or the source of Defendants’ products, and/or that

Plaintiffs have sponsored, endorsed, or approved Defendants’ products and the use of NHL

Marks thereon.

109. Defendants’ acts demonstrate a willful intent to commercially exploit and trade on

the goodwill associated with the NHL Marks.

110. Defendants’ use of the NHL Marks has caused, and will continue to cause,

irreparable injury to the value and goodwill of the NHL Marks, as well as to Plaintiffs’ business,

goodwill, and reputation. Unless restrained and enjoined by this Court, such irreparable injury

will persist.


31

111. In addition, Defendants’ willful infringement and/or counterfeiting activities

entitle Plaintiffs to monetary damages, including but not limited to Plaintiffs’ actual damages,

Defendants’ profits, statutory and/or treble damages, costs, and attorneys’ fees.

SECOND CLAIM FOR RELIEF

(False Association and False Designation of Origin – 15 U.S.C. § 1125(a)(1)(A))



113. Plaintiffs are the exclusive owners and/or U.S. licensors of the NHL Marks,

including the STANLEY CUP Marks and LEAGUE Marks identified above.

114. The NHL Marks and the goodwill of the businesses associated with them in the

United States are valid, of great and incalculable value, are highly distinctive, and have become

uniquely and universally associated in the public mind with Plaintiffs and NHL goods and

services upon which the NHL Marks appear, denoting goods and services of the highest quality

and reputation.



misappropriated, counterfeited, and incorporated the NHL Marks and/or colorable imitations

thereof in Defendants’ businesses, brands, and products offered for sale and sold in interstate

commerce, including but not limited to: (a) using the STANLEY CUP Marks, including trade

dress, in connection with the marketing and sale of the Infringing Stein; (b) creating business

names and website addresses that trade on the STANLEY CUP Marks (e.g., hockeycup.com,

thestanleystein.com); and (c) using the LEAGUE Marks in connection with the marketing and

sale of the Counterfeit Jersey.


32

116. Such uses of the NHL Marks by Defendants are intended to, and are likely to,

confuse and deceive consumers into believing, initially or otherwise, that Plaintiffs are affiliated

with, associated with, or the source of Defendants’ products, and/or that Plaintiffs have

sponsored, endorsed, or approved Defendants’ products and the use of NHL Marks thereon.






will persist.

119. In addition, Defendants’ willful misconduct entitles Plaintiffs to monetary

damages, including but not limited to Plaintiffs’ actual damages, Defendants’ profits, costs, and

attorneys’ fees.

THIRD CLAIM FOR RELIEF

(Trademark Dilution – 15 U.S.C. § 1125(c))





122. The NHL Marks used by Defendants are universally and uniquely associated in

the public mind with Plaintiffs’ goods and services, and are famous and distinctive within the

meaning of the Trademark Dilution Revision Act of 2006 because, among other things:

(a) Plaintiffs have used these NHL Marks continuously for many years throughout the United

States to promote Plaintiffs’ goods and services, resulting in many millions of dollars of sales


33

and revenues each year; (b) Plaintiffs and their authorized licensees have advertised and

publicized these NHL Marks for many years throughout the United States; (c) these NHL Marks

are widely recognized by the general consuming public of the United States, and hockey fans in

particular; and (d) many of the NHL Marks are the subject of valid and subsisting federal

registrations under the Lanham Act.


Plaintiffs’ well-known rights in the NHL Marks, Defendants willfully and pervasively included

NHL Marks and other indicia of genuine NHL and NHL Club goods and services in Defendants’

products offered for sale and sold in interstate commerce, and in marketing and promotional

activities concerning those products, including but not limited to: (a) using the STANLEY CUP

Marks, including trade dress, in connection with the marketing and sale of the Infringing Stein;

(b) creating business names and website addresses that trade on the STANLEY CUP Marks (e.g.,

hockeycup.com, thestanleystein.com); and (c) using the LEAGUE Marks in connection with the

marketing and sale of the Counterfeit Jersey.

124. Defendants’ pervasive use of NHL Marks was intended to, and is likely to, dilute

these NHL Marks by blurring because Defendants’ use impairs these NHL Marks’

distinctiveness and lessens their ability to distinguish Plaintiffs’ products and services from those

of others. Even if consumers were not confused as to whether Plaintiffs produced or otherwise

endorsed Defendants’ products (which they are), the presence of NHL Marks on Defendants’

products reminds consumers of Plaintiffs’ famous marks, and causes consumers to associate

those products with Plaintiffs.

125. Defendants’ pervasive use of these NHL Marks also was intended to, and is likely

to, dilute these NHL Marks by tarnishment by associating those marks in the minds of consumers


34

with products that are poorly designed and of low quality, such as the Infringing Stein and

Counterfeit Jersey.

126. Defendants’ use of these NHL Marks has caused, and will continue to cause,

irreparable injury to the value and goodwill of these NHL Marks, as well as to Plaintiffs’

business, goodwill, and reputation. Unless restrained and enjoined by this Court, such

irreparable injury will persist.

127. In addition, Defendants’ willful dilution entitles Plaintiffs to monetary damages,

including but not limited to Plaintiffs’ actual damages, Defendants’ profits, costs, and attorneys’

fees.

FOURTH CLAIM FOR RELIEF

(Copyright Infringement – 17 U.S.C. § 501)



129. The NHL owns all right, title, and interest to the copyright in the NHL Shield

logo, which was registered with the U.S. Copyright Office on May 31, 2006 (Reg. No. VA 1-

371-932).

130. A true and correct copy of the certificate of the foregoing registration is annexed

hereto as Exhibit E.

131. Without Plaintiffs’ authorization or consent, Defendants willfully copied,

displayed, distributed, and/or made derivative works of the NHL Shield logo in connection with

the Counterfeit Jersey.

132. Defendants’ infringement of the NHL’s copyright has caused irreparable injury to

the NHL, and unless restrained and enjoined by this Court, such irreparable injury will persist.


35

133. In addition, Defendants’ willful infringement entitles the NHL to monetary

damages, including but not limited to the NHL’s actual damages, Defendants’ profits, statutory

damages (if elected, up to the maximum allowable amount of $150,000 for each work willfully

infringed), costs, and attorneys’ fees.

FIFTH CLAIM FOR RELIEF

(Trademark Dilution and Deceptive Acts and Practices

in Violation of New York General Business Law §§ 360-l and 349)









and reputation.




thereof in Defendants’ businesses, brands, and products, including but not limited to: (a) using

the STANLEY CUP Marks, including trade dress, in connection with the marketing and sale of

the Infringing Stein; (b) creating business names and website addresses that trade on the

STANLEY CUP Marks (e.g., hockeycup.com, thestanleystein.com); and (c) using the LEAGUE

Marks in connection with the marketing and sale of the Counterfeit Jersey.


36





139. Such uses of the NHL Marks are also intended to, and are likely to, impair the

distinctiveness of the NHL Marks by lessening the ability of the NHL Marks to distinguish

Plaintiffs’ products and services from those of others, and closely linking the NHL Marks to

poorly designed and low quality goods with which Plaintiffs do not want the NHL Marks

affiliated.

140. Defendants’ actions are of a recurring nature, and have caused, and will continue

to cause, irreparable injury to the value and goodwill of the NHL Marks, as well as to Plaintiffs’

business, goodwill, and reputation. Unless restrained and enjoined by this Court, such

irreparable injury will persist.


damages, including but not limited to Plaintiffs’ actual damages, Defendants’ profits, treble

damages and profits, costs, and attorneys’ fees.

SIXTH CLAIM FOR RELIEF

(Trademark Infringement and Unfair Competition Under New York Common Law)








37



and reputation.




thereof in Defendants’ businesses, brands, and products, including but not limited to: (a) using

the STANLEY CUP Marks, including trade dress, in connection with the marketing and sale of

the Infringing Stein; (b) creating business names and website addresses that trade on the

STANLEY CUP Marks (e.g., hockeycup.com, thestanleystein.com); and (c) using the LEAGUE

Marks in connection with the marketing and sale of the Counterfeit Jersey.










will persist.


damages.


38

SEVENTH CLAIM FOR RELIEF

(Declaratory Judgment)



151. The Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, authorizes the Court to

issue a declaratory judgment.

152. There is an actual controversy between Plaintiffs and Defendants that is ripe for

adjudication by the Court with respect to the validity and registrability of the putative marks

reflected in Defendants’ Infringing CUP Applications.

153. The STANLEY CUP Marks, including but not limited to those marks that are

subject of the STANLEY CUP Registrations, have been in use in commerce by the NHL and

NHLE since well before Defendants initiated use of the “CUP” or “HOCKEY CUP” names and

designs in connection with the Infringing Stein business (and in the Infringing CUP

Applications).

154. Defendants’ use of the “CUP” and “HOCKEY CUP” names and designs, and

their attempts to federally register trademark rights in such names and designs, is intended to,

and is likely to, confuse and deceive consumers, initially or otherwise, that Plaintiffs are

affiliated with, associated with, or the source of Defendants’ products, and/or that Plaintiffs have


155. Defendants’ use of the “CUP” and “HOCKEY CUP” names and designs, and

their attempts to federally register trademark rights in such names and designs, is intended to,

and is likely to, dilute the distinctive quality of the NHL Marks through blurring and

tarnishment.


39

156. Given Plaintiffs’ priority in the STANLEY CUP Registrations, and the confusing,

misleading, and dilutive nature of Defendants’ proposed trademarks in the Infringing CUP

Applications, Plaintiffs are entitled to a declaration that the marks that are the subject of the

Infringing Cup Applications are likely to cause confusion with the NHL Marks and that the

Infringing CUP Applications should not be granted.

EIGHTH CLAIM FOR RELIEF

(Declaratory Judgment)



158. The Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, authorizes the Court to

issue a declaratory judgment.

159. There is an actual controversy between Plaintiffs and Defendants that is ripe for

adjudication by the Court with respect to Defendants’ attempt to cancel the NHL’s STANLEY

CUP Registrations on the grounds of “lack of ownership,” fraud on the U.S. Patent and

Trademark Office, and abandonment.

160. The STANLEY CUP Registrations are valid, subsisting, enforceable, and in many

instances incontestable.

161. The fact that Plaintiffs do not own or allegedly “control” the physical Stanley Cup

trophy has no bearing on the validity of the STANLEY CUP Marks, the STANLEY CUP

Registrations, or the Plaintiffs’ ownership thereof.

162. Because there is no legitimate dispute with respect to Plaintiffs’ ownership of the

STANLEY CUP Marks, representatives of the NHL did not make any false representations of

fact, knowing or otherwise to the U.S. Patent and Trademark Office when applying for the


40

STANLEY CUP Registrations, and thus no claim of fraud in procurement of those registrations

may lie.

163. Defendants’ allegations to the contrary in the Trademark Office proceeding are

inadequately pled and are made without any attempt to determine whether or how the marks

reflected in the STANLEY CUP Registrations are being used in commerce.

164. The NHL has used, is using, and/or has a bona fide intention to use the marks

reflected in the STANLEY CUP Registrations on or in connection with the goods and services

identified in those registrations, and therefore has not abandoned any of its rights.

165. Accordingly, Plaintiffs are entitled to a declaration that the STANLEY CUP

Registrations are valid and are not subject to cancellation on any of the grounds asserted by

Plaintiffs.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs respectfully request that the Court:

a. Declare that Defendants have willfully infringed NHL Marks by using and

incorporating them in connection with the marketing and sale of the Infringing Stein and

Counterfeit Jersey, in violation of the Lanham Act and New York statutory and common law;

b. Declare that Defendants have willfully engaged in false association, false

designation of origin, and unfair competition by pervasive use of NHL Marks in connection with

the marketing and sale of the Infringing Stein and Counterfeit Jersey, in violation of the Lanham

Act and New York statutory and common law;

c. Declare that Defendants have willfully diluted NHL Marks by using and

incorporating them in connection with the marketing and sale of the Infringing Stein and

Counterfeit Jersey, in violation of the Lanham Act and New York statutory and common law;


41

d. Declare that Defendants have engaged in copyright infringement by

copying, displaying, distributing, and/or making derivative works of the NHL Shield logo;

e. Declare that the marks that are the subject of the Infringing Cup

Applications are likely to cause confusion with NHL Marks and that the Infringing CUP

Applications should not be granted, and certify an appropriate order to the Director of the U.S.

Patent and Trademark Office in accordance with 15 U.S.C. § 1119;

f. Declare that Plaintiffs’ STANLEY CUP Registrations are valid and are

not subject to cancellation, and certify an appropriate order to the Director of the U.S. Patent and

Trademark Office in accordance with 15 U.S.C. § 1119;

g. Permanently enjoin Defendants from any and all use of NHL Marks

and/or any other indicia of the NHL or NHL Clubs, including but not limited to in connection

with the marketing and sale of the Infringing Stein and Counterfeit Jersey;

h. Order the seizure, impoundment, and/or destruction of all counterfeit

materials bearing NHL Marks in Defendants’ possession, including but not limited to the

Counterfeit Jersey;

i. Award Plaintiffs monetary damages in an amount to be determined,

including but not limited to actual damages, Defendants’ profits, and enhanced, statutory, and/or

treble damages as available under the pertinent statutes;

j. Award Plaintiffs all of their reasonable attorneys’ fees and costs pursuant

to the fee-shifting provisions of the Lanham Act, 15 U.S.C. § 1117(a), and the Copyright Act, 17

U.S.C. § 505; and

k. Grant Plaintiffs such other and further relief as the Court deems just and

proper.


42 1158581-NYCSR04A - MSW

Date: July 23, 2018 Respectfully submitted,

/s/ Anthony J. Dreyer Anthony J. Dreyer [email protected] Jordan A. Feirman [email protected] SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP Four Times Square New York, New York 10036-6522 Telephone: (212) 735-3000

Attorneys for Plaintiffs


Case 1:18-cv-06597 Document 1-1 Filed 07/23/18 Page 1 of 6

EXHIBIT B


in the united states district court for the southern ... · collectibles, inc. (“a&r”), and...

Documents